In April,2011 the world heard of an interest provoking case. A French company has filed a trademark infringement lawsuit in New York, USA against Yves Saint Laurent (YSL), an iconic fashion house also from France . The case related to release of a collection of monochrome footwear including one in red.
Yes, a shoe red in colour.
Before the case is
discussed, let’s check out the background.
Background
 |
| Pictorial representation of Trade Marked Red shoe sole |
Christian Louboutin, a footwear brand based in Paris, is known for its unique
style of red sole.
In May, 2001, the firm registered its trade mark red sole in France, followed by registrations in other countries.
Trade Mark in USA was granted in April, 2008.
Facts of the Case
YSL in 2011, released a collection of monochrome footwear in various colours including red.
The picture on the right is a representation of YSL's design while the left is from Louboutin.
Just before the release of the YSL collection in April,2011, Louboutin filed a trademark infringement lawsuit in the U.S. District Court for the Southern District of New York. On the ground that YSL was liable under the Lanham Act for claims including trademark infringement and counterfeiting, false designation of origin, unfair competition and trademark dilution. A preliminary injunction preventing YSL from marketing its red monochrome shoes or any other shoe incorporating Louboutin’s trademarked red sole was sought. Reports also suggest a claim of 1 million US Dollar in damages.
YSL filed a counterclaim, seeking from the court a cancellation of Louboutin’s trademark, citing its ineligibility for trademark protection on the grounds that it lacked distinctiveness and was merely ornamental or functional.
Contrary to the believe of Louboutin, the court in August 2011, denied the firm's request to stop the release and sale of women's shoes with red soles by YSL. The judge, Judge Marrero questioned the stand taken by Louboutin and wrote "Louboutin's claim would cast a red cloud over the whole industry, cramping what other designers do, while allowing Louboutin to paint with a full palette." He also wrote, "Louboutin is unlikely to be able to prove its red outsole brand is entitled to trademark protection, even if it has gained enough public recognition in the market to have acquired secondary meaning."
Upon filing of an amicus curiae supporting the right to trademark a color by Tiffany & Co., a jewelry company, which incidentally has its blue box trademarked, the court in September 2012, ruled that Louboutin retains the exclusive right to use the color red on the bottom of its shoes whenever the outer portion of the shoe is any color other than red. Yves Saint Laurent was granted permission to continue to sell its shoes with red soles as long as the whole shoe is red.
This bring question, can a color be trademarked.
The answer is, yes it can be. But not in the sense the statement can mean it to be.
A trademark can be refused in absence of any distinctive character. The distinctive character of a sign is its ability to distinguish the goods and services of a company from the ones of a competitor. A trademark is said to be distinctive when it is arbitrarily chosen with regards to the designated goods and services. A color cannot be owned by any firm but in combination with a unique, distinctive style or design it can be trademarked.
Hence, Louboutin may have the exclusive right to use the red color soles in shoes but law does not bar the use of red color for any other purpose.
You may be surprised that various shades of color are registered with TM offices around the world. Brands use specific color to make their logos,style or packing unique.
Few among them are :
1. Tiffany Blue
2. UPS Brown
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